EPO Board of Appeal revokes patent previously upheld by UPC

Marks & Clerk has successfully secured the revocation of a key European patent belonging to Edwards Lifesciences on behalf of the firm's client, Meril. The patent formed an important part of the wider dispute between Meril and Edwards, and the decision before the European Patent Office (EPO) Boards of Appeal highlights the continuing importance of EPO proceedings within the European patent litigation landscape.

The patent, EP 4 151 181 B1, had previously survived scrutiny before both the Court of First Instance of the Unified Patent Court (UPC) and the EPO Opposition Division.

Marks & Clerk managed a coordinated two-front attack on the patent, leading parallel revocation proceedings before the Paris Central Division of the UPC and opposition proceedings before the EPO. The cases were run in tandem to ensure a consistent and effective strategy across both jurisdictions.

The UPC upheld the patent in amended form on the basis of Edwards' second auxiliary request and found that Meril infringed the patent as amended. Days later, at the EPO opposition hearing, the same claim set was also found to be valid. Meril subsequently appealed both decisions.

Appearing before the EPO Boards of Appeal, Marks & Clerk successfully demonstrated that both the Patent as granted and the claims maintained in the second auxiliary request lacked inventive step and were therefore invalid. Following discussion of Edwards' remaining auxiliary requests, Edwards withdrew all requests beyond the claim set previously upheld at first instance, bringing the appeal proceedings to a close. As a result, the Board overturned the Opposition Division's earlier decision and revoked the patent.

Notably, the decision to overturn the finding of validity of the second auxiliary request was based upon prior art that had been examined and dismissed by the UPC. The decision therefore clearly illustrates the independent role played by the EPO Boards of Appeal within the European patent system. While the patent had previously been found valid and infringed by the UPC, the EPO Board of Appeal reached a different conclusion, and it was ultimately revoked. As Europe's patent litigation landscape continues to evolve, the case demonstrates that the EPO remains a critical strategic forum for parties seeking to challenge patent validity.

The case also highlights the growing importance of close integration between patent attorney and litigation expertise in European patent disputes. With validity challenges increasingly being fought across multiple forums, parties benefit from a coordinated approach that combines deep technical and legal expertise. As a fully integrated firm bringing together patent attorneys and litigators under one roof, Marks & Clerk is uniquely placed to help clients navigate this evolving landscape and deliver consistent, effective strategies across the UPC, the EPO and national courts.

Partner and Patent Attorney Greg Carty-Hornsby said, “We are proud to have secured the revocation of this important patent for our client, Meril. The patent formed a key part of the wider dispute between Meril and Edwards. Although the first-instance decisions were disappointing, we remained confident in our position and successfully overturned the outcome on appeal, achieving a result of significant strategic importance for our client.”

Nilay Lad, General Manager for Intellectual Property at Meril added, “We are delighted with this result and with the support provided by Marks & Clerk throughout the case. Their dedication, expertise and determination played a crucial role in securing a significant victory.”

Details of this story were also covered by Solicitors Journal, Life Sciences IP Review and Law360. 

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